America Invents Act introduces Virtual Marking of Patents

It is now possible to comply with the patent marking requirements by avoiding placing the patent numbers on a product. Instead, one can simply mark the product with the word “patent” or the abbreviation “pat.” together with an address of a website where information associating the product with particular patent numbers may be found. Virtual marking as outlined above can help companies avoid costly changes to molds, dies, packaging etc. in cases where physically marked patent numbers are  not longer valid.

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How to revive a lapsed trademark registration?

Recently I had two clients call me with the same problem. They both had registered trademarks that had become abandoned and wanted to know what to do . The problem of trademarks lapsing or becoming abandoned is quite common in cases where clients register their own trademarks. This is because clients fail to file a Section 8 Declaration of Continued Use, which must filed between the 5th and 6th years after registration of a trademark. The Section 8 Declaration of Continued Use is a sworn statement by the owner of a trademark registration that the mark is still in use in commerce. If the Section 8 Declaration of Continued Use is not filed then the Trademark Office (USPTO) will cancel the trademark registration. So that is how trademarks inadvertently become abandoned.

Now to the solution. Unfortunately, there is no procedure to revive an abandoned trademark registration. Thus, it is best to re-apply for the trademark registration without any delay. This was what the first client ended up doing. Unfortunately for the second client, a third party had applied for registration of the same mark for similar goods and services. Re-applying for registration of the abandoned mark would almost certainly have led to a rejection based on the third party application on the grounds that the two marks were “confusingly similar”. The client could have asserted common law trademark rights against the third party, but the costs would have been at least $100k. In the end the client opted to refile for the trademark registration with the intention of negotiating a co-existence agreement with the third party at the appropriate stage of trademark prosecution.

The moral of the story is to remember to file the Section 8 Declaration of Continued Use between the 5th and 6th years after the trademark registration date. The next best thing is to re-apply for registration of a lapsed trademark registration without any delay so that third parties do not acquire competing rights.

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Should I do a patent search for my invention?

In most cases, inventors are looking to obtain patent protection for their invention. Filing a patent application can be expensive and can be a complete waste of time and money if the invention is not new. This is where doing a patent novelty search is important. A patent novelty search in conducted in order to answer the question: “Is my invention new?” Generally, the patent novelty search involves searching one more patent databases based on carefully selected keywords. If the keywords are not selected properly then the search may exclude relevant patents to may end up including too many patents.  Once the search is completed, the patents that were found must be analyzed in order to answer the question :”Is may invention novel?” This analysis is not easy to do because patents are written in legal and technical language. Therefore, the analysis is best left to a patent attorney.

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Patents do not give right to practice

Clients often have difficulty understanding that a patent does not give them the right to practice the patented invention. A patent is a negative right in that it gives the patentee the right to stop others from making, using, selling… the patented invention.

In practicing your own patented invention you may be infringing the patent of another. As example serves to illustrate:

Assume that the basic automobile was still protected by a patent. If you were the inventor of an automobile with traction control then you would be able to patent your invention. However, in practicing your invention you must first make an automobile and then add the traction control feature. In making the automobile you will be infringing the automobile patent.

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Trademark Marking

Clients are often not clear on when to  use the “® ” or “TM” for trademark marking. “®” indicates a Federal trademark registration and should only be used if you actually have a Federal trademark registration. If you have a pending Federal trademark application or if you want to rely on common law trademark protections then use “TM”.

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